Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd & Anor [2017] EWCA Civ 1 (12 January 2017)

Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd & Anor [2017] EWCA Civ 1 (12 January 2017)

The court held that it is in principle open to the English court to grant Arrow declarations—declarations that a product or process was old or obvious at a particular date—where such relief serves a useful purpose and is not precluded by statute. Section 74 of the Patents Act 1977 does not bar such declarations in respect of patent applications or future patents, as it is concerned only with the validity of granted patents. The declarations sought do not usurp the EPO's function, as they operate only inter partes and do not bind the EPO. The claims for injunctions and against AbbVie UK were also held to be arguable and not suitable for striking out at this stage.

Citation
[2017] EWCA Civ 1
Parties
Claimant/respondent: Fujifilm Kyowa Kirin Biologics Co., Ltd.; Defendant/appellant: AbbVie Biotechnology Limited; Defendant/appellant: AbbVie Limited
Jurisdiction
England and Wales
Judgment Date
12 January 2017
Procedural Posture
Appeal From High Court (patents Court) / Appeal Against Refusal to Strike Out Claims for Arrow Declarations and Related Relief
Outcome
Appeals dismissed
Legal Topics
Arrow Declarations, Patent Validity, Declaratory Relief, European Patent Convention, Divisional Patent Applications, Gillette Defence, Jurisdiction of UK Courts Over EPO Matters
Intellectual Property Law Patent Law Civil Procedure Arrow Declarations Patent Validity Declaratory Relief European Patent Convention Divisional Patent Applications +2 more

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Parties

Fujifilm Kyowa Kirin Biologics Co., Ltd.

Claimant/respondent

AbbVie Biotechnology Limited

Defendant/appellant

AbbVie Limited

Defendant/appellant

Procedural Posture

Appeal From High Court (patents Court) / Appeal Against Refusal to Strike Out Claims for Arrow Declarations and Related Relief

Legal Issues

  1. 1 Whether the English court can grant Arrow declarations (declarations that a product was old or obvious at a particular date) in respect of pending or future patents/applications
  2. 2 Whether such declarations are precluded by section 74 of the Patents Act 1977
  3. 3 Whether claims for injunctions restraining threats of infringement proceedings are arguable

Ratio Decidendi

The court held that it is in principle open to the English court to grant Arrow declarations—declarations that a product or process was old or obvious at a particular date—where such relief serves a useful purpose and is not precluded by statute. Section 74 of the Patents Act 1977 does not bar such declarations in respect of patent applications or future patents, as it is concerned only with the validity of granted patents. The declarations sought do not usurp the EPO's function, as they operate only inter partes and do not bind the EPO. The claims for injunctions and against AbbVie UK were also held to be arguable and not suitable for striking out at this stage.

Court Disposition

Appeals dismissed

Orders

  • The appeals by AbbVie Biotechnology Limited and AbbVie Limited are dismissed.
  • The claims for Arrow declarations, injunctions, and claims against AbbVie UK are not struck out and may proceed to trial.